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UNITED STATES OF AMERICA. 



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A BRIEF HISTORY 



OF 





PATENT 


LEGISLATION 


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UNITED 


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A BRIEF HISTORY 



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Patent legislation 



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THE UNITED STATES. 



By D. WALTER BROWN, Ph. D., 

Solicitor of Patents, 

128 BROADWAY, NEW YORK. 



Entered according to act of Congress, in the year iSSg, 

By D. Walter Brown, 

In the office of the Librarian of Congress, at Washington, D. C. 



THE ENGINEERING & BUILDING RECORD PRESS, '^^-v 

82-84-86 FULTON STREET, ^-— ;^ 

NEW YORK. V^^ 



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A BRIEF HISTORY OF PATENT LEGISLATION IN THE 
UNITED STATES, 

The English Precedent. — The English Colonists to America 
brought with them familiarity with the idea of fostering manufac- 
tures by the grant of exclusive privileges in Patents from the 
Crown to inventors or first introducers. In the Statute of 1623, 
in the reign of James L, directed against grants of monopolies, 
there was an express exception in favor of Patents and Grants of 
Privilege **for the sole working or making of any manner of new 
manufacture within the realm, to the first and true inventor or 
inventors of such manufactures^ which others at the tifne of making 
such Letters Patents^ and Grants shall not use^ so they be not contrary 
to law or mischievous to the State, by raising the price of commodi- 
ties at home, or hurt of trade, or generally inconvenient." 
In the italicized words is the principle of the great structure 
which Congress and the courts have raised in the Patent System 
of the United States. The Colonists, with their remarkable power 
of adapting legal ideas and forms to the new conditions of life 
into which they came, even before the Constitution, began in the 
laws of certain of the Colonies to develop an American Patent 
System, and the utility to the State of patent protection to arts 
and manufactures was recognized in the Constitution in the clause 
conferring upon Congress power to ^* promote the progress of 
science and the useful arts by securing, for limited times, to 
authors and inventors the exclusive right to their respective 
writings and discoveries." Out of the power conferred by this 
clause has proceeded the legislation to be immediately briefly 
summarized. 



THE PATEiNT ACTS. 

The Act of 1790. — The first Patent Act, under the Constitu- 
tion, was approved April 10, 1790, less than a year after the inau- 
guration into the Presidency of General Washington. It pro- 
vided for the granting of Letters Patent, which should secure to 
*'the patentee, his heirs and assigns, for fourteen years, the exclu- 
sive privilege of making, constructing, using and vending to 
others to be used," the thing patented. The patent was to be 
issued on a petition to the Secretary of State, the Secretary for 
the Department of War and the Attorney General, setting forth 
that the " petitioner had invented or discovered a useful art, 
manufacture, engine, machine or device, or any improvement 
therein, not before known or used," and praying that a Patent 
might be granted therefor. A specification in writing was required 
to be delivered to the Secretary of State, " containing a descrip- 
tion, accompanied by drafts or models, and explanations and 
models (if the nature of the invention or discovery admitted of a 
model) of the thing invented or discovered," and this specifica- 
tion was required to be so " particular, and said models so exact, 
as not only to distinguish the invention or discovery from other 
things before known and used, but also to enable a ivorkman^ or 
other per S071 skilled in the art of ma/iiifacture, whereof it is a branchy 
or wherewith it may be nearest connected ^ to make, construct and use 
the same^ to the end that the public may have the full benefit thereof 
after the expiration of the patent term'' 

The italicized parts present most clearly the doctrine on 
which the patent laws of tne United States are founded, and the 
nature of the contract impliedly existing between the inventor or 
patentee and the Government. The latter throws around the 
former, for a certain time, the protection of its sovereignty, in 
securing to him an exclusive privilege, in return for which protec- 
tion, and as a condition of its grant, the inventor is required 
to file with the Government the full and complete directions 



necessary to inform the people how they may make and freely 
use the invention after the expiration of the patent term. 

The Statute also contained provisions for bringing infringe- 
ment suits and for recovery of damages, and the defendant was 
authorized to plead the general issue and introduce proof to 
show that the patentee was not the first inventor, that "the speci- 
fication did not contain all that was necessary for making or using 
the invention, or more than was necessary, and that the addi- 
tional parts were misleading so as to prevent the obtaining of the 
result described in the specification/' Proof of any of these 
things voided the patent. Suits were also allowed to be brought 
for annulling a patent on the ground that it had been obtained 
" surreptitiously or by false suggestion." 

The scale of fees seems curious to-day — viz.: For receiving 
and filing the petition, 50 cents ; for filing the specification, per 
copy sheet containing one hundred words, 10 cents ; for making 
out patent, $2 ; for affixing the great seal of the United States, 
$1 ; for indorsing the day of delivering the same to the patentee, 
including all intermediate services, 20 cents. 

This early act containing the fundamental principles of subse- 
quent legislation, the later laws will be more briefly noted in 
those particulars wherein they differ from their predecessors. 

The Act of 1793. — The Act of 1790 had provided for the 
granting of patents to any person without reference to nationality. 
That of 1793 restricted the grant to citizens of the United 
States, and directed the petition to be presented to the Secretary 
of State alone. This Statute also first provided, as a condition of 
grant of patent, that the mventor should make oath or affirmation 
that " he verily believed himself to be the true inventor or dis- 
coverer of the art, machine, or improvement for which he solicited 
a patent. Written references to drawings were also first required by 
this act, which further provided that the inventor of an ifnprove- 
ment (which was patented) of a machine or process, before 



patented, might not make, use, or vend the original discovery, 
nor should the first inventor have right to use the improvement ; 
and simple change of for^n or proportions of a machine or compo- 
sition of matter was declared not to be a discovery in the sense 
of the Statute. Provision was made for assigning inventions and 
for recording assignments in the office of the Secretary of State, 
and also for a Board of Three Arbitrators to consider interfering 
applications and determine to which applicant a patent should be 
granted. The fee for obtaining a patent was fixed at $30. 

The Act of 1794. — As the Act of 1793 repealed that of 1790, 
in 1794 a law was enacted providing for the continuance of suits 
which had been begun under the Act of 1790. 

The Act of 1800. — The right to obtain a patent was, by this 
act, extended to aliens^ who had, at the time of their petition, 
resided for two years in the United States, and such aliens were 
required to make oath, or affirmation, that ** to the best of their 
knowledge or belief, such invention, art, or discovery had not 
been known or used, either in this or any foreign country." By 
this act, also, was provision first expressly made for the granting 
of patents to the legal representatives of inventors who had died 
before obtaining patents. 

The Act of 181 9. — Original cognizance, as well in equity as 
at laW; was, by this act, secured to the Circuit Courts of the 
United States in all actions arising under the patent and copy- 
right laws. 

The Act of July 3, 1832. — Here, for the first time, is express 
authority given for the extension and reissue of patents. It was 
enacted that petitions for extensions of patents should be made 
to Congress before the expiration of the term of the patent, to- 
gether with a statement, verified under oath, of the value of, and 
receipts and expenditures under, the patent. A reissue of a pat- 



ent might be made by the Secretary of State, upon surrender to 
him of such patent, when a patent was "invalid or inoperative by 
reason that any of the terms or conditions relating to the suffi- 
ciency of the specification and drawings, of the act of 1793" 
(substantially the same as the provisions of the Act of 1790) " had 
not by inadvertence, accident, or mistake, and without any fraud- 
ulent or deceptive intention, been complied with." The reissue 
was to take the place, in all respects, of the original patent, and 
be vaHd for the unexpired term. The act also provided for the 
publication in January of each year of lists of all patents which 
had expired during the year preceding. 

Reissues^ formally recognized by this act, had been previously 
granted by the Secretary of State, and had been sustained by the 
Supreme Court, John Marshall delivering the opinion in one of 
the cases. In accordance with these decisions the Act of 1832 
was drawn, and the reissue of patents continues lawful to the 
present time. But inventors and their assignees abused the priv- 
ilege, and the Supreme Court has recently rendered decisions 
which will hereafter prevent the obtaining of reissues for the pur- 
pose for which they are usually sought, viz., to broaden claims 
after the original patent has been found incapable of securing to 
its owners wide protection. A brief discussion of this matter 
will be made hereafter. 

The Act of July, 13, 1832. — The right to obtain a patent is 
now extended to every alien^ who at the time of his petition is a 
resident of the United States, and has declared his intention to 
become a citizen, without regard to the time during which he may 
have resided in the country. But every patent granted by virtue 
of the act becomes void on the " failure of the patentee, for the 
space of one year, from the issue of the patent, to introduce into 
public use in the United States, the invention ; or if the invention 
for the period of six months after such introduction shall not con- 
tinue to be publicly used and applied in the United States ; or in 



case oi failure to become a citizen zX the earliest period at which the 
patentee shall be entitled so to become." 

The Act of 1836. — By this act were first created a Patent 
Office^ Commissioner of Patents^ and Seal of the Ojfice. The Patent 
Office was attached to the Department of State, and the Com- 
missioner, appointed as now by the President, by and with the 
advice of the Senate, received authority to perform, under direc- 
tion of the Secretary of State, all duties relating to the granting 
of patents. The proper subject matter of patents was defined as 
follows : " Any person * * * having discovered or invented 
any new and useful art, machine, manufacture, or composition of 
matter, or any new and useful improvement on any art, machine, 
manufacture, or composition of matter, not knoivn or used by 
others before his or their discovejy or invention thereof, a?id not at 
the time of his application for a patent, in public use or on sale, with 
his consent or allowance, as the inventor or discoverer * * * 
the Commissioner may grant a patent therefor." In this act first 
appears the requirement that the inventor shall specifically claim 
the part, improvement, or combination, which he desired to cover 
by the patent. Authority was also given to date back a patent to 
the date of filino- the specification and draiuings, provided the date of 
filing was not more than six months prior to the actual issue, and 
an inventor was not to be deprived of his right to a patent 
by reason of his having previously taken out a foreign patent, 
if such foreign patent had been published within six months 
of the date of filing the application in the United States. 
Examinations into the state of the art were by this act first 
directed to be made, and the citing of references to the applicant, 
as to what appeared to anticipate his invention, was also first specifi- 
cally provided for. A Board of Examiners, three in number, and 
to be appointed by the Secretary of State, was created to hear 
appeals from decisions of the Commissioner on the matter of 
anticipation. The appeal fee was fixed at $25, and in order to 

8 



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obtain the right of appeal, the applicant was lequired to reneiv 
his oath of invention. Procedure in cases of interference was 
; more carefully defined than hitherto, and remedy by bill in equity 
was provided in cases of interfering patents, or when an applicant 
had been refused a patent on the ground that the granting of his 

' application would interfere with an unexpired patent. Caveats 
were also first provided for by this act. The caveat was to be 
filed in the confidential archives of the office, and secured to the 
caveator for a year the right to be informed of any subsequent 
application with which his caveat would interfere, and to have 

] three months from the time of such notice in which to file his 
complete application for a patent. The/^<? for a caveat was $20, 

i which sum might be applied to pay the fees of the subsequent 

: taking out of the patent. Specifications of subsequejit improvements 
made by the original inventor might be added to the original 
w description and specification, and have thereafter the same effect 
in law as though the improvement had been embraced in the 
^' original patent. Extensions were directed to be made on 
- application to the Commissioner, and under direction of the Sec- 
retary of State, the Commissioner of Patents, and the Solicitor of 
the Treasury. The fee, on applying for an extension, was to be 
^40. In infringement suits, the fact that the invention had been 
before known or used in a foreign country, it not having been pat- 
ented or described in a?iy printed publication was not to void a 
patent; but the '' failure of the patentee, if an alien, for the space 
of eighteen months from the date of the patent, to put and continue on 
sale to the public, on reasonable terms, the invention or discovery,'' was 
to void the patent. The fees were fixed in the act, as follows : 
For citizens of the United States, and for aliens who had 
declared their intention of becoming citizens, $30 ; for subjects 
of the King of Great Britain, $500 ; for all other persons, 
$300. 

This act also made provision for a patent library, and an exhi- 
bition of models and specimens. 



The Act of 1837. — On December 15, 1836, the Patent Office 
Building was burned. On March 3, 1837, an act was passed pro- 
viding for the re-collection, as far as possible, of the patents, 
specifications, drawings, and models, which had been destroyed. 
Provision was also made in the act for the re-issue of patents in 
several sections^ in place of a single original, and for the issue of a. 
pate?it to the assignee of the inventor. Disclaimers were now first 
specifically named, and it was provided that when a patentee had 
innocently claimed moie than he had invented, his patent yet 
should be valid for so much as he had invented. For the first 
time, also, appears the proviso that in every such case costs could 
not be recovered from a defendant, unless the plaintiff had 
entered the proper disclaimer in the Patent Office, prior to the 
commencement of the suit. 

The x\ct of 1839. — The cursory provision in the Act of 1836, 
that an inventor's having taken out a foreign patent should not 
per se deprive him of the right of obtaining a United States 
patent, was repeated more definitely and the privilege extended 
in this act, by a clause to the effect that " no person should be 
debarred from receiving a patent * * by reason of the inven- 
tion having been patented in a foreign country more than six months 
prior to his application ; provided the invention had not been in- 
troduced into public and common use in the United States prior 
to the application for such patent." A patent, so taken, was to 
be limited to a term of fourteen years fro?n the date of publication 
of the foreign patent. One who had purchased or made, before 
application for pate?it by the inventor^ a newly invented machine, 
manufacture, or composition of matter, was secured in his right 
to make^ use, and sell that specif c thing, even after the inventor ob- 
tained a patent ; and such purchase, sale, or use of the invention 
was not to invalidate the patent, unless it had been for more than 
two years prior to the application, except on proof of abandonment 
of the invention to the public. Here we find the first definite 

10 



statement that two years public use of an invention, before appli- 
cation for patent, is allowable without invalidating the patent. 
The remedy by hill in equity was extended to all cases where 
patents were refused either by the Commissioner or the Chief 
Justice of the District of Columbia, and where appeals were previ- 
ously allowed from the Commissioner to the Board of Examiners, 
such appeals, were by this act, to be taken to the Chief Justice of 
the District Court for the District of Columbia. 

The Act of 1842. — Patents for Designs were first, by this act, 
expressly provided for, the procedure for obtaining such patents 
defined, the /^r;;/ fixed at seven years ^2Mdi the fee at one-/ial/ that 
required for mechanical patents. Any citizen, or an alien who had 
resided one year in the United States and taken oath of intention 
to become a citizen, might obtain a design patent. By this act, 
for the first time were patented articles requireil to he marked with 
the date of the patent^ and severe penalties were imposed for failure 
so to do. Also for the first time, were others tha?i owners of rights 
under ^ditents, forbidden (under penalties) to mark patented articles 
with words '^ patent,'' ''*' patentee,'' etc. 

The Act of 1848. — The power of extending patents, previously 
vested in a board composed of the Secretary of State, Commis- 
sioner of Patents, and Solicitor of the Treasury, was by this act 
conferred upon the Commissioner alone, and proceedings defined. 
The fee for recording assignments, which had been variously fixed 
by preceding laws, was now settled at the present rates — vi^., for 
not more than 300 words, $1 ; for from 300 to 1,000 words, $2^; 
and for more than 1,000 words, $3. 

The Act of 1849. — The second section of this act placed the 
Patent Office under the supervision of the newly created Secretary 
of the Interior. 

II 



The Act of 1852. — By this act appeals from the Commissioner 
of Patents were allowed to be taken to the assistant judges of the 
Circuit Court of the District of Colmnbia^ diS well as to the Chief 
Judge. 

The Act of February 18, 1861. — By this act appeals from 
all judgments of the Circuit Courts in cases arising under the 
patent and copyright laws were made permissible to the Supreme 
Court of the United States, without regard to the sum in contro- 
versy. 

The Act of March 2, 1861. — The term of patents granted 
subsequent to this act was fixed at seventeen years, and all exten- 
sions of such patents ^\trt forbidden. The /^^^ were fixed at the 
present rate — viz., on filing an application, $15 ; on issuing the 
patent, $20. The terms of design patents ^tro, fixed as they still 
remain — viz., three years and six months ; seven years, and four- 
teen years, at the selection of the applicant ; and design patents 
were capable of seven years exte7tsio?ts. The fees were fixed at $10, 
$15, and $30, according to the length of the term. The provis- 
ion of the Act of 1836, permitting specifications of improve7fie?its 
to be added to the original patent, was repealed, and for such im- 
provements independent patents were required, as is the present 
practice. The permanent Board of Three Exafiiifiers-in-Chief, 
was first provided for by this law, to hear appeals from the pri- 
mary examiners and the examiners in interferences. From their 
decision appeal v^diS directed to the Commissioner in person, as is 
the present practice ; and to obtain right of appeal to the Exam- 
iners-in-Chief an application must have been iufice examined and 
rejected by the primary examiner as is still the law, while to obtain 
the second examination, the inventor was required to renew his 
oath. Such renewal is not now required. It was provided that 
failure to mark patented articles with the word ** patented " and 
date of patent should //-^ew^/ the recovery of damages in an infringe- 

12 



ment action, unless proof were given that the defendant had con- 
tinued his infringement after due notice thereof. The penalties for 
failure to so mark, fixed by the Act of 1842, were repealed. 

The Acts of 1862, 1863, 1864, 1865, 1866. — Most important 
in these acts was tne provision, first appearing in the Act of 1863, 
that if the final fee were not paid within six months of the date of 
allowance of the patent, the patent should be withheld and the in- 
vention should become picblic property^ as against the applicant. 
This was amended by the Act of 1864, to permit any person hav- 
ing an interest in such invention, as inventor or assignee, to pay 
the final fee within six months of the date of passage of this act, 
and receive the patent ; but no person was to be held responsible 
in damages for manufacture or use of such invention in the mean- 
time. By the Act of 1865, either the inventor or the assignee 
obtained the right to make application for a patent within two 
years of the date of allowance. There was the same proviso as to 
damages as in the Act of 1864. By the Act of 1866, the fee for 
the appeal from the decision of the primary examiner to the 
Examiners-in-Chief was fixed at %\o. 

Thus, in brief resume, we have followed the patent legislation 
of the United States from the earliest law down to the Consol- 
idated Patent Act of 1870, which gathered into one comprehen- 
sive measure the substance of preceding legislation and court 
decisions. This act repealed all earlier laws, was itself slightly 
amended in 187 1, and was substantially incorporated into the 
"Revised Statutes" of 1874, which, with some few additions, are 
the law to-day. The resume thus given has indicated the growth 
of the system to the form it now has, all of the essential features 
of our present statutes having been developed prior to the passage 
of the Act of 1870. For this reason, and because of the great 
bulk of the provisions of the Revised Statutes relating to patents, 
I shall only quote from them a few sections, indicating who may 
obtain patents and what constitutes patentable subject matter. 

13 



The Revised Statues. — Any person, whether a citizen or an 
alien, may obtain patent protection for the term of seventeen 
years, who has invented or discovered any new and useful art, 
machine, manufacture, or composition of matter, or any 7iew and use- 
ful i?nprovement thereof, ?tot known or used by others in this coicntry, 
and 710 1 patented or described in a?iy printed ptiblication in this or any 
foreig?i count?y, before his invention or discovery thereof, and not in 
public use or oji sale for more than two years prior to his apt)lication, 
unless the same is proved to have been abandcned!' The fact that 
the invention has been first patented in a foreign country will not 
debar the inventor from obtaining a valid patent in the United 
States, unless the same has been here '' i?itroduced into public use 
for more than two years prior to the application^ But the patent 
will expire with that foreign patent having the shortest term. 

Application (petition), must be made in writing to the Com- 
missioner of Patents, and a written description of the invention, 
with drawings, must be filed in the Patent Office, "' in such full, 
clear, concise, and exact terms as to enable any person skilled in 
the art or science to which it relates, or with which it is most 
nearly connected, to make, construct, compound, and use the 
same." "The applicant must make oath that he does verily 
believe himself to be the original and first inventor or discoverer 
of the art, machine, manufacture, composition, or improvement, 
for which he solicits a patent ; that he does not know and does 
not believe that the same was ever before known or used ; and 
shall state of what country he is a citizen." Distinct claims shall 
be made to the " part, improvement, or combination which he 
claims as his discovery." 

If Xh^ final fee is not paid within six months from the time the 
application was passed and allowed " the patent shall be withheld." 
But any person ** who has an interest in an invention or discovery, 
for which a patent was ordered to issue, * * * but who fails 
to make payment of final fee within the six months, shall have a 
right to make an application for a patent for such invention or 



14 



discovery any time within two years after the allowance of the 
original application. But no person shall be held responsible in 
damages for the manufacture or use of any thing for which a 
patent was ordered to issue under such renewed application prior 
to the issue of the patent." A person who purchases of the 
inventor, or with his knowledge and consent constructs any 
newly invented patentable article, or who sells or uses one so 
constructed, prior to the application by the inventor or discoverer 
for a patent, shall have the right to use and to vend to be used 
the specific thing so made or purchased. 

Patented articles are required to be marked by the owners of 
the patent with the word ^' patented " and date of the patent. If 
the article is not so marked damages cannot be recovered in an 
infringement suit, except on proof that the defendant was duly 
notified of the infringement, and thereafter continued to make, 
use, or vend the patented article. Penalties are imposed on those, 
who, without authority, mark articles with the word "patent," 
etc., or with any imitation of the name of the true patentee. 

Caveats are granted to citizens of the United States, or to 
aliens who have resided for one year in the United States and 
have made oath of intention to become citizens. The fee for a 
caveat is $io ; its protection lasts for one year, and the caveator 
is entitled to notice of the filing of any subsequent application with 
which his caveat would interfere. He is given three months 
after such notice in which to complete his application and file his 
specification and drawings. 

Design patents are granted to both citizens and aliens for the 
terms of three years and six months, seven years and fourteen 
years, as the applicant elects. 

Fees : On filing each original application for a mechanical or 
process patent, $15 ; on issuing each such original patent, $20 ; 
for design patents, $10, $15, and $30, according to the length of 
the term. 



15 



FIRST DRAUGHTS AND REISSUES. 

Subsequent to the Act of 1832 it became the practice of 
inventors and owners of inventions to take out the original 
patents with little care, and afterward, when the patent had 
become valuable, to obtain reissues with claims so broadened as 
to give adequate protection to the owners of the patent. The 
privilege w^as abused, and converted into a means of forcing out 
of the field inventions which had sprung up between the date of 
the original grant and the reissue. The matter attracted the 
attention of the Circuit Courts in many cases, and finally the 
Supreme Court prevented the continuance of the practice by 
several very important decisions, especially that in the case 
known as Miller & Co. vs. Bridgeport Brass Co. The effect of 
these decisions is that a patentee can not now obtain a reissue 
for the purpose of broadening the claims of his patents. Even if the 
original invention was justly entitled to the full benefit of the 
broad claims afterwards sought to be incorporated into the 
reissue, yet such a z;^//V reissue can not be granted. Further, 
the Commissioner of Patents conforms the practice of the 
Patent Office to the decisions of the courts, and will not to-day 
reissue a patent for the purpose of broadening claims. The only 
exception to this statement of the law and the practice is that 
where an inventor mistakes the scope of his invention, and 
immediately on discovery thereof applies for a reissue, he may 
obtain a valid reissue patent with the broad claims to which he 
is entitled. Investors in patent property now well understand 
that they will ever be restricted to such protection as is granted 
in the original patent, and the careful first draught and the 
proper wording of the claims to protect all there is in the invention 
may become of very great monetary value to the patentee. In 
the patent practice of to-day there is but one safe rule — to pre- 
pare the specification and claims as di finality (excepting, of course, 
amendments required by the Patent Office) which can never 

16 



after be altered or amended in the manner of enlarging the pro- 
tection conferred by the patent. For such draughts of the speci- 
fications and claims the most careful and intelligent work of the 
attorney is required. The owner of the invention should satisfy 
himself that such work is done for him. 

I respectfully refer to the following gentlemen : 
Henry C. Meyer, Esq., editor of The Engineering and Building 

Reco7'd^ of New York. 
Thomas E. Brown, Esq., the New York Stock Exchange. 
C. F. Frothingham, Esq., President of the Universal Lock 

Company of New York. 
J. J. R. Croes, C. E., Chief Engineer of the Suburban Rapid 

Transit Railway Company of New York. 
Rudolph Hering, C. E., Department of Public Works of New 

York. 
H. W. Brtnckerhoff, C. E., 82 and 84 Fulton Street, New York. 
William J. Baldwin, C. E. and M. E., 82 and 84 Fulton Street, 

New York. 
Eugene C. Smith, M. E., Manager and Engineer of the Uni- 
versal Lock Company of New York. 
William Gibson, Jr., Esq., Publisher of The Engineering and 

Building Record, of New York. 
Gjlbert a. Schellenger, Esq., Architect, 128 Broadway, New 

York. 

Respectfully, 

D. Walter Brown. 



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